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04 September 2017

Trademarks – Phonetic similarity when word used as suffix in one mark and as prefix in another

Bombay High Court on 2-8-2017, in the case of Pidilite Industries Limited v. Poma-Ex Products, observed that there existed high degree of phonetic similarity between the mark of the plaintiff “FEVIKWIK” and the mark of the defendant “KWIKHEAL”. The Court issued an interim injunction in favour of the Plaintiff in a suit for trademark infringement & passing off and copyright infringement.  It was held that the word “KWIK” is a dominant part of the trademark of the plaintiff and that the mark used by the defendant is prima facie deceptive or misleading. 

The Court observed that the defendant could not point out any dictionary meaning of the word “KWIK”, and no document was produced in support of the submission that the word mark “KWIK” is common.The contention that there was no likelihood of any deception or confusion as the mark “KWIK” is used by the plaintiff as suffix whereas the defendant used the said mark as prefix, was also rejected by the Court. The photographs prima facie indicated that the label containing trademark of the plaintiff and that of defendant on the products displayed side by side by dealers indicated the similarity of the two products to the last decimal. Hence the product of the defendant was a colourable imitation of the plaintiff’s product.

It was also held that overall structural and phonetic similarity between two products is likely to cause confusion in the mind of the customers.  The court was also of the view that the plaintiff was not precluded from raising plea of fraud in the suit alleging infringement of the registered trademark, even though no such allegation was made by it in its application under Sections 47 and 57 of the Trade Marks Act, 1999 for rectification of the mark filed before the Appellate Authority.